TM TKO Releases Manual Search Tools!

TM TKO has released manual search tools. The tool supplements our existing automated knockout tools and to allow you to do complex, targeted research.

Accessing Manual Search

To access manual search tools, log and then click “Search” in the toolbar.

TM TKO’s manual search combines structured field-based searching with flexible, Boolean logic that visually displays nested conditions, making even complicated search strategies simple to follow.

Use Cases for Manual Search

Due Diligence

Search by owner, including current owners and prior owners. You can even do separate searches for prior owners that had immediate rights in the mark or those that were “owners” only of a non-present interest, like a security interest or option.

This search identifies active registrations and applications held by a single party:

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And this identifies registrations that a company used to own:

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Quick Status Checks

TM TKO lets you quickly check on the status of one of your client’s applications or a third-party mark, and take advantage of our reporting tools if you need to save results in a way that you can’t do conveniently using TESS.

Search by Status

Identify applications by their most recent status – outgoing Office Action, inbound Office Action Response, Published, Allowed (or extended), a TTAB status, and more.

Clearance or Analysis

Want to use your own search strategies? No problem! You can still take advantage of complex mark search strategies that our automated clearance search relies on. For instance, “Mark Basic” builds in a variety of search strategies like searching for the exact mark, the mark as a term in other marks, stemmed versions of the mark, pseudo mark, and translation, and phonetically similar marks otherwise that appear to be strong matches.

You can also search by mark “features,” like the presence of a numerical or temporal component, currency, domain name extension, emoticons, and more.

This sample search identifies instances where a filing includes POPCORN and either disclaims the term, has a 2(f) claim, or has a Supplemental Register registration and doesn’t include any of Classes 21 (popcorn machines) or 30 (popcorn) or 31 (unpopped popcorn), or “popcorn” in the description of goods and services. You could use this research to, for example, assess whether a disclaimer would be appropriate.

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Business development

It’s simple to zoom in on unrepresented applicants facing issues like an Office Action or a recently abandoned application, or to limit your search to a geographic area for a more personal touch.

The following search will identify either recently-abandoned applications or newly issued Office Actions for unrepresented parties, and focus just on applicants located in Tennessee. This identifies a significant number of local, unrepresented applicants with problems that a trademark attorney could help with.

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Start Using TM TKO

Not currently using TM TKO? Subscriptions with unlimited use of all of our searching and watching tools start at $250 per month for one seat. If you have more limited needs or have to have pass-through transactional billing, you can sign up for an unlimited-use daily pass for $75.

Sign up for a free one-month demo here, or contact us with any questions at inquiries@tmtko.com or 206-679-1895.

ThorCheck updates!

We have just released two improvements to ThorCheck™ that we’re very excited about.

Similarity searching. You can now use ThorCheck to find evidence that goods or services are related, by finding instances where the same mark is used for both sets of goods or services with the same owner. ThorCheck identifies relevant evidence whether it was in a single registration or in multiple registrations. Since many companies split coverage for a mark in multiple classes into multiple registrations, ThorCheck can save hours of work.

To do a similarity search, just select the option below:

ThorCheck_options.png

Filing basis options. You also now have an option to either limit your results to Section 1(a) use-based registrations only or to also include non-use-based registrations under Sections 44(e) and 66(a). The former remains the default, as there is TTAB precedent that this evidence is more persuasive, but Section 44(e) and 66(a) registrations paired with evidence of actual use in US commerce can still be useful.

Example search – pizza and sausage. Of course pizza and sausage are related goods, you say, whilst munching on a supreme pizza. If you want to document their relationship more formally in an opposition proceeding, and an Instagram post of your preferred pizza toppings won’t quite be enough, a quick ThorCheck similarity report identifies highly persuasive, registry-based evidence that the goods are related. A screenshot showing the first couple of results is below.

ThorCheck_pizza_sausage.png

We hope you enjoy the new options!

New Tools: TSDR Status and Title Export

You do trademark searches for lots of reasons – to clear a mark, to pull together a field of relevant marks to make a dilution argument, to pull together evidence for a TTAB proceeding or litigation, and to do transactional diligence.

If you want to refer to a US federal trademark registration in an Office Action response or in a TTAB proceeding, for example, to make the argument that a common term in your client’s mark and a prior registration is weak or diluted, see Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129 (Fed. Cir. 2015), you cannot simply refer to the mark’s registration number, provide full details, or even provide a search result from a commercial vendor, see In re Hub Distrib., Inc., 218 USPQ 284, 285 (TTAB 1983): the Office or the Board will take no account of this information, even though they can quickly and easily verify the details using their own computer systems. Instead, the attorney must submit a “status and title” copy to make the third-party registration “of record” in the prosecution file or dispute proceeding. See In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB), aff’d per curiam, 864 F.2d 149 (Fed. Cir. 1988). Making registrations of record used to require a certified copy from the Office, which could take time to deliver and was (and remains) expensive, but now a TSDR status page for each record suffices. See TBMP § 1208.02.

If you are submitting a lot of evidence of third party registrations, this can still a time-consuming and unpleasant project. TM TKO now provide two super-fast, easy ways to export status and title copies.

To export from a search report or from a ThorCheck report, first, make sure that you have tagged the relevant records. Second, in the upper right of your report, you’ll see a “TSDR” export option.

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Click the “TSDR” button and then click “Export.”

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You will get a report summarizing the documents that were downloaded and letting you know about any errors, and have the option to download either a single combined PDF file or a ZIP file with each individual record in a separate file.

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You can also export TSDR records directly from a standalone tool, available in the tool menu.

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We hope these new tools will help save you time and effort and provide better results to your clients!

New features! Tag, filter, sort, Word export, and more.

Over the past few weeks, TM TKO has rolled out a number of improvements, but we haven’t done a formal blog post about them yet!

Search, Watch, and ThorCheck

You can now interact with the mark result tables in search, watch, and ThorCheck report results with a full range of interactive tools:

  • tag key results;
  • filter by tagging status or live/dead status;
  • sort results by overall relevance (mark similarity + goods/services similarity) or just mark similarity (i.e. sort by the y-axis on the scatterplot);
  • filter using free-text search (to filter by class, goods, owner, etc.);
  • export to Word.

These features live in a toolbar at the top of your federal search results (in search and watch) or at the top of your ThorCheck report.

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The image below shows the “Mark” similarity sort applied, bringing more-similar marks (albeit for much less related goods) to the forefront. Applying this sort is a quickest way to review searches where your look at the scatterplot suggests that the most concerning marks are out-of-class.

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Free-text filtering opens up lots of possibilities, including filtering by goods:

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Filtering by class:

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And filtering by owner:

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Export to Word lets you export your table of results (either the whole table or just tagged items) for further word processing, making it easy to incorporate results into an Office Action Response or just to match your preferred firm or practice group formatting.

Export

Search – Double-click to jump

Double-click on any point in the scatterplot to jump immediately to the full record in the table. Interacting with TM TKO’s unique graphical search analysis is now easier than ever.

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Search and Watch – Setup

We’ve added a checkbox to let you limit results to just the class(es) of the goods or services you entered. This helps where you are searching a very diluted term, or if the client only is willing to enforce in the class(es) where they own a registration.

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What’s Next?

We hope you love all the new interactive features!

We are working on a solution that will generate TSDR status and title copies for you. It should be available both as a standalone tool and as an export option from search, watch, ThorCheck reports. It will be a great convenience when generating large amounts of evidence for an Office Action Response, Letter of Protest, or an adversarial proceeding at the TTAB or in federal court.

Keep your eyes out for updates here and on Twitter!

Tapping the Power of Office Action Search

The vast majority of “law” created in the trademark space is made via ex parte examination by the US Patent & Trademark Office. There have been over nine million Office Actions and Responses sent to and from the USPTO and trademark professionals, compared to only some 850 citable and 11,600 non-citable decisions from the Trademark Trial and Appeal Board, and a similarly small number of federal and state cases.

This June, TM TKO is revealing tools that will let you tap this huge body of Office Actions and responses. This series of blog posts will explore situations where the power of Office Action search can help you be a better lawyer.

Let’s consider a situation where your client, a craft brewery, has applied for the shape of a tap handle that it plans to use in bars. The design consists of a five-pointed star. The Examining Attorney has refused the mark as ornamental. How do you move forward?

Currently, you’re limited to poking around on TSDR in the hopes that you run across an application that raised a similar issue. With TM TKO, you can skip all the guesswork and focus right in on the most relevant prior Office Actions, and identify model responses. You can even limit the results to applications that eventually moved on to publication, indicating that they overcame the issues raised by the Examining Attorney.

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Here’s what we see – a set of results focused on exactly the sort of issue your client faces.

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The first result is the prosecution history for the following tap design:

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In an Office Action issued in 2011, the USPTO preliminarily refused registration on the grounds that hexagonal designs were common or basic in the industry, and thus likely to be perceived as ornamental or otherwise non-distinctive. Counsel for the applicant, Charles Bacall of Verrill Dana, LLP, submitted a lengthy response arguing both that the design is inherently distinctive, differentiating it from the evidence provided by the Examining Attorney, and arguing in the alternative that the mark has acquired distinctiveness based on considerable sales figures and supporting affidavits from industry experts. It’s a perfect model to start thinking about and planning a response to your client’s Office Action. Despite the excellent arguments, the Examining Attorney would not yield, and the mark was registered on the Supplemental Register – also a useful data point in advising your client about the chances of success and the best path forward. A 2(f) claim was accepted in a subsequent filing for the same mark, and the mark is now protected on the Principal Register, Reg. No. 4,872,679.

Today, not only does the tap handle design a registered trademark that helps drinkers identify Allagash Brewing Company beers from across a bar, the company even sells tap handles from its online company store. You can buy one for your home pub at https://shop.allagash.com/collections/tap-handles.

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Over the coming days, we will continue to explore more situations where Office Action and Office Action Response searches can help you do your best work for your trademark clients.

Pharma? Class 5 filings in 1Q 2017

International Class 5, which includes pharmaceuticals, is one of the most active classes for trademark applications at the USPTO. This blog post looks at some interesting Class 5 filing trends (and interesting marks) for applications filed in the first quarter of 2017.

The Most Common Class 5 Products

What types of products are applicants filing for? Most applications appear to be for easy-to-produce, lightly-regulated products like supplements and vitamins. It makes sense that there would be more of these than development-intensive, highly regulated pharmaceuticals, but the degree to which applications for these goods predominated was surprising.

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How are Applicants Filing?

Most applications are filed based on actual use, followed by intent-to-use claims. Foreign priority or registration claims and Madrid Protocol applications lagged well behind.

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Where are Applicants Located?

Together, applications from twenty of the largest foreign filers of Class 5 applications amounted to only about 800 applications, or about 16% of all 2017 applications in Class 5. Canada and Switzerland led the way, with China, Japan, Germany, and the UK well ahead of the rest of the pack.

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Some Fun Brand Names

Finding good pharmaceutical trademarks is tough work. There are a slew of pending applications and registrations, so clearance is tough, FDA name approval can be difficult, and marketing groups are torn between more suggestive names and completely coined marks. Here are a few of them we enjoyed.

Mark Comments
SLNDR Lose weight by removing vowels!
DANOCRINE Too remote for an effective demonstration
PUMP DIRT Checking the ingredient list…
SEXWAX !
OREGANOL

PROMATO

Combine for health-food lasagna?
DIAMOND FRESH As fresh as a billion year old chunk of carbon.
DRDOSE How is there not a rapper named this, you say? There is.
CRYPTOMUNE This will heal your animal, but if we tell you how, we’ll have to kill you.
NITRO BEETS I like this one.
GUT INSTINCT This too.
SAEF And effictive

 

Update: Losses in UDRP Complaints in 1Q 2017

Our last blog post on the UDRP, breaking down losses in 2016, was quite popular, so we’re doing an update for cases in the first quarter of 2017.

Data set

The data was manually coded from the National Arbitration Forum (“NAF”) searchable case database with decision dates from January to March 2017. Our previous research found similar outcomes for World Intellectual Property Organization (“WIPO”) proceedings, so this update focuses solely on NAF decisions.

Outcome Cases Percentage
Cancellation 0 0%
Transfer 342 92.7%
Denied 27 7.3%
Total 369 100%

Trends

We analyzed each victory for a respondent based on the grounds cited by the UDRP panel. Many decisions had more than one ground cited, so the total count of issues exceeded the raw number of decisions. One decision was not available online, and so counts as a denial but does not have grounds coded.

UDRP 1Q 2017

As in 2016, far and away the two most common causes of complainant’s losses were a failure to show any trademark rights that predated the domain name registration date (40.1% of decisions) or a failure to adequately demonstrate any trademark rights at all, particularly where the applicant claimed common-law rights (often in a fairly descriptive mark) without significant evidence of sales and advertising (14.9% of decisions).

One decision in particular was interesting: Wendy Murdoch, LLC v. Romero, FA 1706433 (Nat. Arb. Forum Jan. 13, 2017) (declining to transfer effortlessrider.com). The complainant had a trademark registration for the mark EFFORTLESS RIDER predating the domain name registration date, and used the domain name for competitive horseback-riding services, using the complainant’s mark prominently on the website. The panel had no problem finding that the domain name was confusingly similar to the mark nor that the use was a bad faith attempt to “create confusion for commercial gain,” but found that the respondent’s conducting business under EFFORTLESS RIDER – the complainant’s mark – insulated it under the “rights or legitimate interests” tab since the respondent was a “real business which offers real services” with an LLC of the same name (albeit created after the domain name was registered) and so was “commonly known by the at-issue domain name.”

This is a fairly perverse result. Under the logic, a seller of counterfeit Nike products that brands its entire site NIKE at the domain name nikeshoes4u.com would be immune to a UDRP, while a seller of counterfeit Nike products at a site titled SHOES at the domain name nikeshoes4u.com would, and so would a page of ads for NIKE knockoffs at the same domain. The first example is engaging in more conduct that the panel found to be bad faith, and which is explicitly conduct “for the purpose of disrupting the business of a competitor,” UDRP Par. 4(b)(iii), yet somehow creates a “right or legitimate interest.” Most panel decisions deal with the issue by noting that the domain registrant that uses “the domain name (and Complainant’s mark) to sell products in competition with Complainant demonstrates neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the name.” Ultimate Elecs., Inc. v. Nichols, FA 195683 (Nat. Arb. Forum Oct. 27, 2003). The “commonly known as” exception usually to domain owners who use the domain for goods or services that are unrelated to the goods and services provided under the trademark owner’s prior mark. The Wendy Murdoch decision appears to be incorrect, and, if the line of reasoning spreads, potentially problematic for complainants, who will need to use the ACPA or another slower, more expensive enforcement option.